The evolving approach of Brazilian courts to Standard Essential Patent (“SEP”) litigation was at the center of the panel “Litigation Involving SEPs”, held during the 46th International Congress of the Brazilian Intellectual Property Association (ABPI).
Moderated by Ana Paula Affonso Brito, partner at Montaury Pimenta, Machado & Vieira de Mello, the panel brought together attorneys at law Rodrigo Fux, Marcelo Mazzola and Appellate Court Judge Luciano Sabóia Rinaldi de Carvalho, who shared different perspectives on preliminary injunctions, technical evidence and procedural alternatives in SEP disputes.
Rodrigo Fux: injunctions as one of several available remedies
Among other approaches discussed, Rodrigo Fux addressed the appropriate timing and role of preliminary injunctions in SEP litigation, stressing that courts have other procedural tools and alternatives to consider before resorting to an exclusionary remedy.
One of the ideas highlighted during his presentation was that: “In SEP litigation, an injunction may be better understood as a final ratio, rather than an initio ratio, considering the other procedural alternatives available to the court.”
Fux also discussed the importance of hearing both sides before granting measures capable of significantly affecting the defendant’s business, noting the broader international tendency toward greater caution with ex parte injunctions in complex SEP disputes. According to him, the opportunity to hear the other party before granting an injunction is an important element to be considered, particularly in light of the approaches adopted in other jurisdictions.
Marcelo Mazzola: the importance of technical evidence
Among the different procedural and evidentiary issues addressed in his presentation, Marcelo Mazzola emphasized the importance of technical evidence and expert examination in SEP litigation. He discussed early expert examination as one of the mechanisms that may assist courts in assessing technically complex questions before deciding on measures with substantial market impact. According to him, early expert evidence may provide the court with a more solid technical basis for the assessment of preliminary relief.
The discussion highlighted the potential value of obtaining independent technical input on issues such as infringement and essentiality at an early stage of the proceedings.
Justice Rinaldi: ABPI and the amicus curiae role
To close the panel Appellate Court Judge Luciano Rinaldi brought a broader institutional perspective to the discussion. Among other considerations, he addressed the potential contribution of specialized institutions to judicial proceedings involving complex SEP issues.
In this context, he raised an interesting possibility: having the ABPI participation as amicus curiae in SEP disputes, given the relevance and technical complexity of these cases. The suggestion recognizes ABPI’s potential to contribute specialized and institutional perspectives to cases involving issues that may extend beyond the individual interests of the parties.
A developing Brazilian SEP framework
The panel reflected the growing sophistication of the SEP debate in Brazil. Proportionality in preliminary relief, consideration of alternative measures, early technical evidence and institutional participation emerged as important elements in the continuing development of the Brazilian approach to SEP litigation.
Rather than pointing to a single procedural solution, the discussion showed the importance of providing courts with different tools and perspectives to address the particular circumstances of each SEP dispute.
